Monday, January 26, 2009

Dear Rich: I have a question. I am a music producer who up until now was a part of a production team. Recently my partner informed me, contrary to our previous verbal agreements, that he no longer wants to co-own an LLC with me. He has agreed that I be paid 50% of the profits, royalties, publishing, etc. None of our projects are copyrighted at this point. I want to make sure that I am named as a co-owner of the copyright and publishing. What should I do to make sure that I am given proper credit and get paid? What language should I add to a contract? I'm so glad you asked. If you and your co-producer formed a limited liability company (LLC), the first thing you need to do is to check your LLC documentation to see if the paperwork discusses what happens if a member leaves (or you dissolve it). Usually this information is found in your LLC Operating Agreement. As for copyright ownership, the Dear Rich staff reminds you that your copyright already exists in all of your works. However, registration is recommended, and you may want to prepare registrations for all of your existing works (see our handy Form CO video) listing both of you as co-authors. If you haven't formed a publishing entity, you're probably better off now forming separate publishing entities as it will make it easier to guarantee some of your payments. If you belong to perfoming rights organizations, you should file the songs with them as well, providing for separate payments to each of you as co-authors or co-publishers.

If your LLC paperwork doesn''t help, you need to draft an agreement that sets out the 50-50 split and provides for other items such as guaranteeing proper credit, each party's right to make deals regarding your co-productions, obligations to pay, and methods for resolving disputes. You may be able to draft it yourself -- you can find information on all the topics discussed above in my Music Law book, which you can peruse with limitations online (thanks to Google). But most likely you'll need to check with a lawyer. The Dear Rich staff cannot recommend language for your legal agreement as we provide information, not advice.

Wednesday, January 21, 2009

Dear Rich: I have a question. A very good friend of mine had senior pictures taken of her daughter (we'll call her "D") with a professional photographer. He took some pictures of D that are not tasteful and do not portray D in a light that she wants on public display. My friend has expressed this to the photographer multiple times. The photographer bought a yearbook advertisement and it had one of the unflattering pictures in the ad. My friend and her family are upset and concerned that the photographer will use these pictures in other forms of advertising such as newspapers or in a mall display. Do they have any legal recourse if the photographer refuses to honor their wishes? I'm so glad you asked. The short answer to your question is, "Possibly, but it depends on the paperwork."

Under copyright law, the photographer controls the right to reproduce the image unless a contract was made that assigned those rights to D (or her parents). However, D may have some control over the use of her name or image when it's used to sell products or services (based on a legal principle known as "the right of publicity"). Unfortunately, the right of publicity differs from state to state and it's not always clear who -- for example, celebrities or non-celebrities -- can assert rights.

Regardless of your state's law, if D is over 18 and signed a typical photographer's release, it may be difficult to stop the ads. If D is under 18 and signed a release, that release is "voidable," meaning that D can terminate the rights granted (although that will be more difficult if D's parents or legal guardians also signed the release on behalf of D). In summary, enforcing the right of publicity is tricky and will likely require retaining an attorney to review all these issues.

The Dear Rich staff is unsure about what you mean by "unflattering," since many yearbook photos tend to haunt subjects, particularly those who have gone on to greater things. If the picture is upsetting for reasons that may be exploitive or illegal, then D should contact an attorney to determine if defamation, invasion of privacy, or other more serious charges should be considered.

Dear Rich: I have a question. I was at my bank to deposit a check from a mutual fund. I requested the bank make a photocopy of the check for my personal records. They refused, saying that it would be a copyright violation. Is that correct? If that is true, are they in violation of copyright laws by providing images of my canceled checks with my statements? I'm so glad you asked. The short answer to both your questions is, "No." The Dear Rich staff was upset to learn of your treatment. Copyright law (37 C.F.R. Sec 202.1(c)) does not protect blank forms, a rule that's consistently enforced by the courts. The underlying principle -- according to the Supreme Court -- is that these forms do not convey information but merely serve as "repositories to structure the recording of information." It's possible that some blank checks may include copyrighted imagery -- for example, photos of sunsets or animals. In that case, the image may qualify for protection but a bank employee's copying of a specific check for a customer would definitely fall within the category of fair use. That's because the purpose is purely transformative -- the copy is being made to record the financial information, not to duplicate the imagery.

Saturday, January 17, 2009

Dear Rich: I have a question. I live in France and I have toy patterns from 35-year-old South African magazines. Am I allowed to now use these patterns to make my own version of these toys? Also, I have tracings taken from 35-year-old coloring books that I would like to make in felt, then mount into picture frames. Am I allowed to do this? I'm so glad you asked. The short answers to both of your questions are, "Maybe." In either case, the risk of getting hassled seems slim.

Although this blog only provides answers regarding U.S. law, the Dear Rich staff can tell you that South Africa and France are both members of an international copyright treaty that provides reciprocality between member countries (meaning that the works of a foreign national in one nation will be protected in another) and that works are protected for a minimum copyright term of the life of the author, plus fifty years. So the content of the magazines is likely still protected and the South African owner could sue you in France.

However, some issues are not absolutely clear, such as: (1) Are the toy patterns protectible under copyright or are they considered unprotectable "useful articles"? (2) Do three-dimensional toys based on those patterns infringe the patterns? (3) Does the magazine's copyright necessarily protect the pattern or resulting toy? The more useful question for you is whether the owner of the pattern will ever learn of your use or care enough to investigate rights. Usually, it's not worth suing over such things unless the alleged infringer has made enough money to make a lawsuit worthwhile.

The framed felt coloring book montages create more complex copryight issues. The drawings in the coloring books are protectible and your resulting creation is probably a derivative work in which you each claim rights -- that is, both parties own rights to their separate contributions. Again, this is an academic analysis and the bigger question is really whether the owner of a 35-year-old South African copyright will learn about and pursue someone in France over allegedly copied toys and coloring books. Although we can't be sure, the Dear Rich staff is betting that's not likely to happen.

Thursday, January 15, 2009

Dear Rich: I have a question. I have coined a phrase that I predict will be adopted as the catch phrase for a political and economic era that is quickly approaching. I would like to claim credit for coming up with this phrase, but prefer it to manifest itself, rather than seeding the media with it. Is there any means of laying legal claim to a phrase only -- when there is no product associated with it? If so, would registration ever entitle me to any sort of monetary gain? I'm so glad you asked. The short answers to your questions are, "No," and "I don't think so."

Copyright law won't protect short phrases or slogans because they are considered "de minimis," or too small to qualify for copyright. (I've put together a helpful article on the subject.) However, if you use the phrase in connection with a product or service, you may be able to protect and federally register it under trademark law. The rights you acquire under trademark law would (with the exception of famous trademarks) allow you to only stop others from using it on competing services or products. In rare instances, movie companies have stopped the use of well-known phrases such as "Me Tarzan, You Jane," or "E.T. Phone Home" on merchandise (even though the Dear Rich staff maintains that the latter phrase was never used in the movie). In summary, there is no type of registration that will protect the phrase unless it is used in conjunction with a product or service. (By the way, the Dear Rich staff once met the man who claimed to have coined the phrase, "Let's Go Mets" -- a claim that the staff later sadly learned was subject to dispute.)

Dear Rich: I have a question. My business partner and I have acquired trademark registration for the name of our business. We bought the domain name (.com), as well as about nine different extensions (.net, .org, etc.), and plural versions in nine extensions as well. We also have registered copyright protection on the name. I was going to use the name for a blog at the Blogspot domain -- but it is already taken. (The person who had it is no longer using it and has started a different blog.) Do we have any legal rights to the name when it is used as part of the domain name at Blogspot. If so, can we ask a confusingly similar website/blog to cease and desist? I'm so glad you asked. The short answer to your questions is, "Probably."

In your case, you registered in two classes and one of them included "On-line journals, namely, blogs featuring self-help, personal growth, and gratitude." So, you'll have a good basis to stop a blog that offers information or commentary under a confusingly similar name. That is, if you went to court, you would have a good chance of prevailing.

However, you will have difficulty asserting your rights against the blogger under international cybersquatting rules, even if the blogger acted in bad faith, since all Blogspot.com blogs are subdomains. In other words, bloggers at Blogspot.com don't "own" domains; they've acquired limited rights to post under Blogger's (that's the company that runs the service) terms of service. However, if the blog's name is misleading or confusing people as to its source, you may be able to appeal to Blogger (owned by Google, Inc., btw) based on a violation of its blog content rules. Write to them and explain the situation; they may be able to help you out.

Wednesday, January 14, 2009

Dear Rich: For my daughter's wedding this past August we hired a photographer that relinquishes all copyrights to the photos. The package deal that we chose gave us a DVD album of the some 300+ photos that he took of the bride and groom with an additional 40+ photos of friends and family as we left the church. As parents of the bride we chose the photographer and package deal for the wedding and paid for it. I feel that we now own the pictures and do not have an obligation, moral or otherwise, to make a copy of the DVDs to hand over to the groom's parents. Nor should I feel bad that we did not hire the photographer to do extended family sittings - we paid only for an extended bride and groom photo shoot. The photographer has posted all the pictures he gave us on his web site and his prices for printing up the photos is very reasonable. My question is an etiquette question. Is it wrong to ask the groom's parents to pay for a copy of the DVDs that the photographer delivered to us? I would like to ask the groom's parents to pay about 20% of the total cost of the photographer. TheDear Rich Staffis thrilled to have been asked an etiquette question. On the other hand, we're a bit distressed to note that somebody's marriage is starting out with the in-laws bickering over photo reproduction rights.

We're hung up about who owns the copyright in the wedding photos. You say the photographer "relinquished" the copyright. Did he assign the rights to you? If so, why is he posting the photos and selling prints? We have a feeling he didn't assign copyright and that's why he can still post and sell the pictures. If we're right and the photographer still owns the copyright, then you have the perfect (and most pathetic) excuse for not duplicating the DVD -- you could be sued for copyright infringement.

For the sake of the happy couple. We're not sure how you arrived at the 20% figure but we wish this matter had been discussed before hostage negotiations were commenced over the wedding DVD. Regardless of who owns the copyright, we hope you follow Dr. Phil's advice (See #4) and we also suggest that you consult with the bride and groom before making any decisions (as they are the ones who will suffer the most from any resulting squabbles).

Monday, January 12, 2009

Hey Rich: I have a question. I just moved to California from Arizona and notice lots of decals on cars that say NOR CAL -- NOR CAL with a star or other object in between NOR and CAL. Can you trademark NOR CAL? Would you have to trademark every design with NOR CAL? I'm so glad you asked. The short answers to your questions are "Yes," and "No." However, we will need to qualify these answers (and segue into the "long answer"): (1) As has been pointed out to the Dear Rich staff, "trademark" is not a verb. You cannot trademark anything; you can only acquire and assert trademark rights. (2) You can only acquire trademark rights if you are the first to use a mark in connection with the goods or services in commerce. So if someone is already using the mark in connection with goods or services, you're probably out of luck.

The first step for anyone who wants to register a trademark is to check the USPTO site (click "Trademarks," then "Search TM database"). For example, if you searched for "NOR CAL," "NORCAL" and "NOR*CAL," you will find there are over 20 registered trademarks for goods and services such as building materials, real estate listings, spring water, recycling services, insurance services, tennis goods, decals, t-shirts (see above), and snowboards. In general, under trademark law you can stop someone from using a confusingly similar trademark. So, for example, if you acquired NOR CAL for one product, you could prohibit someone from using NORCAL or NOR*CAL on similar goods. Your challenge in registering NOR CAL is to find goods or services that are not currently sold under a NOR CAL trademark.

One other wrinkle: Since NOR CAL is a designation for Northern California, you would also want to be sure to follow the rules for trademarks that serve as geographic indications -- in particular, you don't want to imply that your goods come from Northern California if they don't.

Monday, January 5, 2009

Dear Rich: I have a question. I have coined a phrase that I predict will be adopted as the catch phrase for a political and economic era that is quickly approaching. I would like to claim credit for coming up with this phrase, but prefer it to manifest itself, rather than seeding the media with it. Is there any means of laying legal claim to a phrase only -- when there is no product associated with it? If so, would registration ever entitle me to any sort of monetary gain? I'm so glad you asked. The short answers to your questions are, "No," and "I don't think so."Copyright law won't protect short phrases or slogans because they are considered "de minimis," or too small to qualify for copyright. (I've put together a helpful article on the subject.) However, if you use the phrase in connection with a product or service, you may be able to protect and federally register it under trademark law. The rights you acquire under trademark law would (with the exception of famous trademarks) allow you to only stop others from using it on competing services or products. In rare instances, movie companies have stopped the use of well-known phrases such as "Me Tarzan, You Jane," or "E.T. Phone Home" on merchandise (even though the Dear Rich staff maintains that the latter phrase was never used in the movie). In summary, there is no type of registration that will protect the phrase unless it is used in conjunction with a product or service. (By the way, the Dear Rich staff once met the man who claimed to have coined the phrase, "Let's Go Mets" -- a claim that the staff later sadly learned was subject to dispute.)

Books by the Staff

The Dear Rich staff provides easy-to-understand answers to questions about copyright, trademarks and patents (and related law). Send us questions at dearrichquestion at gmail.com. We cannot guarantee an answer and if we do answer, that doesn't make us your lawyer. Please don't send questions if they are not for publication.